Friday, 31 July 2015

"The decision of the Examining Division is incomplete and, thus, this is a fundamental deficiency in the first instance proceedings" according to the Appellant. The Board of Appeal is requested to remit this case back to the first division. In this appeal, which lies from a decision of the Examining Division, the decision of the Board op Appeal starts with a reasoning whether the case has to be remitted to the Examining Division in view of the objections of the Appellant and in view of all documents in the file of the case. For the interested reader: the full text of the decision also discusses substantive aspects of the case.

Monday, 27 July 2015

Well before the oral proceedings, the proprietor/appellant requests the oral proceedings to be recorded and made public, The appellant next raises a partiality issue against the board (based on being a possible substitute for VP3). Subsequently, the appellant requested a stay of proceedings and questions to be referred to the Enlarged Board.

Tuesday, 21 July 2015

Can an improved recommender system be inventive? Claim 1 of the main request concerned a 'method of discovering relationships between items'. In response to a query item, user logs are found in which the query occurs. Based on the logs a result item is then identified. One problem with such recommenders is that best sellers tend to occur in many user logs. Thus, such an algorithm would tend to recommend best sellers in response to any query. The invention in this application solved this problem by identifying an item which is over-represented compared to all user logs. An auxiliary request also outputs the identified result item as a
recommendation.

However, the board will have none of it. Improvement in the selection of an item for recommendation is regarded as subjective, and thus not technical, and thus not patentable. A lot of non-trivial research is done on recommender systems, however; much of it involving mathematics (see this example). Following this decision, none of it can be protected.The decision uses the notorious general-purpose computer as closest prior art. Some other boards seem to dislike this and have held that notorious should be interpreted narrowly (T698/11; T690/06; T359/11). In this regard it would be interesting if the amendments suggested in an obiter dictum (R.4.8) were carried out, to see if that could at least have swayed the board to adopt a more realistic starting point for inventive step.

Thursday, 16 July 2015

When the claims relate to attenuated bacteria for the production of a vaccine (here for pigs), but such attenuated bacteria were not available at the time of filing, then it is best to describe in the application as filed how to attenuate. If you don't, or in the present case show data that attenuation was in fact doubtful or even absent, you fail miserably under Art 83 EPC, as becomes clear in this decision where the proprietor that aimed at a general production method for a Lawsonia intracellularis vaccine was left with nothing else than a single bacterial strain from auxiliary request VI for which it could not be shown that that strain was not attenuated and thus, the proprietor was given the benefit of the doubt for that particular strain.

Friday, 10 July 2015

The closest prior art and the objective technical problem were disputed because the closest prior art does not mention the problem of the claimed invention. This appeal lies from a decision of the Examining Division to refuse a patent for an invention that relates to the Audio Video Coding Standard of China (AVS). The Board of Appeal clearly discusses the inventive step of the invention. In this discussion the above mentioned objections of the Appellant (Applicant) are discussed extensively. The Applicant also considered his right to be heard violated. The Board also provides a clear discussion of this subject at the end of the decision.

Monday, 6 July 2015

In first oral proceedings in opposition appeal, the Board had admitted a new line of attack under Article 100(c) EPC into the appeal proceedings, and, after having heard the parties the Board expressed the opinion that the patent could not be maintained as granted because claim 1 violated Article 123(2) EPC. The respondent's representative then declared that he intended to file an auxiliary request. However, this required a prior consultation with the patent proprietor and its Australian representative. The Board informed the parties that, having taken into account the admission of the appellant's new line of attack at a very late stage in the proceedings and the need to give the respondent a fair chance to defend its patent, it was willing to continue in writing and exceptionally conduct second oral proceedings in the present case. Both parties agreed to hold second oral proceedings after the second week of March 2015. Only ten days before these second oral proceedings, the respondent informed the Board that Dr. Andrew Morton, an Australian patent attorney would join the respondent's representative in attending the oral proceedings on 18 March 2015. The respondent asked that Dr. Morton be allowed to speak in its name under the supervision of its representative.In support of its request, the respondent essentially submitted that Dr. Morton would not make submissions in the capacity of a technical expert, but as a patent attorney who was very familiar with the case, had advised the professional representative before the oral proceedings and would continue to do so during the oral proceedings. The Board made an -in my view- surprising decision as to this request, which seems to be difficult to reconcile with the criteria formulated by the Enlarged Board of Appeal in G 4/95, r. 10, last sentence & hn. II-b-iii and r.13 & hn.II-c.

Friday, 3 July 2015

The appeal lies from a decision to revoke the patent in opposition based on the main request incorporating an unallowable disclaimer [Art.123(2)].

The original claims tried to overcome an objection under Art.53(a) in conjunction with Rule 28 (c), as involving the destruction of human embryos, following the Enlarged Board decisions G 1/03 and G 2/10.

In summary, the claim of the main request looked like:

1. Non-tumorigenic cell composition derived from embryonic stem cells of mammals, comprising […] with the proviso that the method does not involve the destruction of human embryos.

In this claim no disclaimer was required, since this claim does not relate to human embryonic stem cells or methods for their preparation, but neural progenitor cells, and methods for their preparation. In the claimed process, which is always directed to existing ES cell lines, no human embryos would be destroyed, according to the proprietor. How the ES cell lines were derived would then be irrelevant for the embodiment of the invention.

The Board of Appeal followed the reasoning of T 2221/10 (same Board, other composition). That Board came to the conclusion that to answer the question whether the use of established human ES cell lines under Rule 28 (c) is excluded from patentability needs to be assessed by looking at necessary steps to produce the cells, even if not claimed. That board, after thorough analysis of the prior art, came to the conclusion that at the filing date all available human ES cell lines were originally isolated from embryos, which were destroyed during the extraction of cells (see points 28 and 29 of that decision). Since in this case the application is even filed earlier that also applies here.

The auxiliary request thus violates Art.53(a) in conjunction with Rule 28 (c), as interpreted in G 1/03 and G 2/10.

To assess the disclaimer in the main request, the Board concluded that it was undisputed that the disclaimer was added to exclude subject-matter for non-technical reasons, complying with one of the criteria in G 1/03. However, the matter remaining in the claim was not properly supported by the description, thus failing another main criterion for disclaimers. At the moment of filing the application, all available ES cell lines were originally isolated from embryos that were destroyed during the extraction of these cells . Thus the main request violates Art.123(2).

A request for a referral to the Enlarged Board of Appeal was not granted. The Board answered all four questions.